Apple, Inc. v. Universal Secure Registry LLC

1. Case Identification

• Case #: CBM2018-00026
• Patent #: 8,577,813
• Filed: May 3, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Universal Secure Registry, LLC
• Challenged Claims: 1-26

2. Patent Overview

• Title: Universal Secure Registry
• Brief Description: The ’813 patent describes a system and method for authenticating a user's identity to enable a financial transaction. The invention centers on a "Universal Secure Registry" (USR), which is a secure central database. This USR communicates with a user's portable electronic ID device, which is claimed to include a biometric sensor, a user interface for inputting secret information (like a PIN), a processor, and a communication interface for interacting with the USR and a point-of-sale (POS) device.

3. Grounds for Unpatentability

This petition for Covered Business Method (CBM) review asserted a single ground for unpatentability based on patent-ineligible subject matter.

Ground 1: Claims 1-26 are Unpatentable Under 35 U.S.C. § 101

• Prior Art Relied Upon: The challenge was based on patent eligibility under 35 U.S.C. § 101 and the two-step framework established in Alice Corp. v. CLS Bank Int'l. The argument relied on legal precedent and the patent's own disclosures rather than a combination of technical prior art references.
• Core Argument for this Ground:
  • Alice Step 1 (Abstract Idea): Petitioner argued that all challenged claims are directed to the patent-ineligible abstract idea of "verifying an account holder's identity based on codes and/or information... before enabling a transaction." The petition contended this is a fundamental, long-standing economic and business practice, analogous to a bank teller checking a customer's photo ID or a bouncer checking age before granting entry. Petitioner asserted that merely automating this practice on a generic computer does not confer patent eligibility. The petition further characterized the core concept as a mental process—comparing received information to stored information to make a decision—which is a subcategory of unpatentable abstract ideas.
  • Alice Step 2 (No Inventive Concept): Petitioner argued the claims lack an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The petition asserted that the claim limitations, considered individually and as an ordered combination, add nothing more than conventional computer components performing their well-understood, routine functions. It was argued that the ’813 patent specification itself emphasizes the generic nature of the system, stating it can be implemented on a "general-purpose computer system" and can use "any kind of database." The individual elements—a generic biometric sensor, a standard user interface, a conventional processor, and a database—were all well-known. Petitioner contended their combination into a system for identity verification was merely the predictable use of existing tools to automate the abstract idea. The dependent claims were also argued to be non-inventive, adding only minor variations like using a PIN, storing data in memory, or adding user interface features, all of which are conventional post-solution activities.

4. Key Claim Construction Positions

• Petitioner proposed constructions for five key terms, arguing for their broadest reasonable interpretation to demonstrate their generic nature and support the §101 challenge.
• "biometric input": Petitioner proposed this term means "information about a user's physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph." This construction was argued to be important for distinguishing true biometric data from other secrets like a PIN, reinforcing that the claims simply combine conventional authentication factors.
• "secure registry": Petitioner proposed this term means "a database with access restrictions." This construction was intended to show that the central USR is not a specific technological advancement but a generic database performing a conventional security function, which supports the argument that the claims lack an inventive concept.
• Other Terms: Constructions were also proposed for "secret information," "authentication information," and "point-of-sale device" to further establish that the claims recite a collection of generic components and data types used in their ordinary and conventional ways.

5. Key Technical Contentions (Beyond Claim Construction)

• Failure to Qualify as a "Technological Invention": A central contention, specific to CBM review, was that the ’813 patent is not directed to a "technological invention" and is therefore eligible for CBM review. Petitioner argued the patent fails both prongs of the test for a technological invention under 37 C.F.R. § 42.301(b). First, the petition asserted the claims do not recite a novel and unobvious technological feature, instead relying entirely on conventional hardware and software. Second, Petitioner argued the patent does not solve a technical problem with a technical solution. It contended that the stated problem—verifying identity—is an inherently non-technical business or economic problem, and the patent's solution is merely the application of generic computing functions, not a specific technical solution to a technical problem.

6. Relief Requested

• Petitioner requested the institution of a Covered Business Method review and the cancellation of claims 1-26 of Patent 8,577,813 as unpatentable for claiming ineligible subject matter under 35 U.S.C. § 101.